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Date of Decision: 21st April, 2023 C.O. (COMM.IPD-TM) 686/2022
BURGER KING COMPANY LLC ..... Petitioner
Through: Mr. Raunaq Kamath, Mr. Aditya Gupta, Mr. Mukul Kochhar and
Mr.Rahul Bajaj, Advocates.
Through: Mr. Shailen Bhatia, Mr. Amit Jain and Mr. Raghav Bhalla, Advocates for R-1.
Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat and
Mr.Alexander Mathai Paikaday, Advocates for R-2.
JUDGMENT
1. The present rectification petition has been filed seeking cancellation/removal of the impugned mark, registered under no. 2052257 in class 43 in the name of the respondent no.1, from the Register of Trade Marks. 2. Earlier, the petitioner had filed a writ petition being W.P.(C) NO. 2695/2018 (later renumbered as W.P.(C)-IPD 53/2021) seeking cancellation of the aforesaid trademark. Vide order dated 20th March, 2018, while issuing notice in the said writ petition, a Coordinate Bench of this Court had granted stay on the operation of the aforesaid mark and the marks bearing registration nos. 2052258 and 2052259.
3. Vide order dated 26th May, 2022, the aforesaid writ petition was dismissed as withdrawn by a Coordinate Bench of this Court while giving liberty to the petitioner to file a rectification petition. The stay granted on the operation of the impugned mark was extended for a period of six weeks.
4. Pursuant to the aforesaid liberty, the present rectification petition was filed by the petitioner. Vide order dated 12th July, 2022, notice was issued and the respondent no.1 undertook the following: “Mr. Bhatia, learned counsel, at this stage, on instructions, submits that Respondent No. 1 shall not rely on the registration with respect to Trademark Application number 2052257, in the opposition and rectification proceedings, which are coming up for hearing before 26.07.2022.”
5. The aforesaid undertaking given by the respondent no.1 has continued to be in effect till date. Counter-affidavit has also been filed on behalf of the respondent no.1.
6. The petitioner is a company based in United Stated of America, which was founded in the year 1954 under the name BURGER KING. It is currently the second largest quick service restaurant (QSR) hamburger company in the world, which manages and operates a worldwide chain of over 18,000 QSRs, serving more than 11 million customers daily in approximately 100 countries.
BANSAL
7. The trademark BURGER KING is registered in the name of petitioner in over 122 countries worldwide. In India, the earliest registration of the trademark BURGER KING dates back to the year 1979. Details of registrations of the trademarks of the petitioner in India in various classes are given in paragraph 10 of the petition. The registration of the device mark in class 43 dates back to 19th August, 2010. The petitioner entered India in the year 2014 and opened its first BURGER KING restaurant in New Delhi on 9th November, 2014. At present, the petitioner operates over 250 Burger King Restaurants in India.
8. The petitioner has mentioned its annual sales turnover worldwide from the years 2010 to 2021 in paragraph 25 of the petition. The annual turnover of the petitioner in the year 2021 was 23,050 million US dollars. The expenses incurred by the petitioner on advertisement and promotions are mentioned in paragraph 26 of the plaint.
9. In August, 2011, the petitioner became aware that the respondent no.1 has applied for registration of the impugned trademark in class 43. As per the examination report issued by the Registry, the trademark application of the respondent no.1 was objected to and the registered mark of the petitioner was cited in the examination report. The petitioner’s attorneys filed a request under form TM-58 with the Trade Mark Registry in terms of Rule 41 of Trademark Rules, 2017, in order to receive intimation when the impugned applications are published in the trademark journals so that the petitioner may oppose the same. However, the Registry advertised the impugned mark of the respondent no.1 in 2016 without informing the petitioner and the BANSAL impugned mark was registered in favour of the respondent no.1.
10. In the year 2014, the petitioner filed a suit for infringement against the respondent no.1. On 25th July, 2014, an ex parte injunction order was passed in favour of the petitioner and against the respondent no.1, restraining the respondent no.1 from using the trademark BURGER KING or any other mark similar thereto. The aforesaid injunction order was confirmed vide judgment dated 24th September, 2018.
11. In addition to the impugned mark, the respondent no.1 has also filed various other trademark applications in respect of BURGER KING formative marks, which have been opposed by the petitioner. The details of the said applications are given in paragraph 45 of the petition.
12. Counsel for the petitioner submits that the primary element of the impugned mark is identical to the petitioner’s well-known trademark BURGER KING. He further submits that the additional words in the impugned mark, i.e., “Family Restaurant” are descriptive in nature and have been written in a small font as compared to the words BURGER KING. He further submits that the impugned mark has been registered in respect of services for providing food and drinks, temporary accommodation: café and coffee bar, restaurants including self-service, take away and fast food restaurants, which are included in class 43 and are identical to the services provided by the petitioner under the BURGER KING trademark. Reliance in this regard is placed on the judgment of the Coordinate Bench of this Court in Max Healthcare Institute Ltd. v. Sahrudya Health Care Pvt. Ltd. 2019, SCC OnLine Del 9036.
BANSAL
13. The petitioner is also a prior user of the trademark BURGER KING as compared to the respondent no.1. Therefore, the registration ought not to have been granted in terms of Section 11 of the Trademarks Act, 1999.
14. Counsel for the respondent no.1 submits that the respondent no.1 has filed an appeal against the judgment dated 24th September, 2018 confirming ex parte injunction granted on 25th July, 2014, which is pending adjudication before the Division Bench of this Court. Hence, the adjudication of the present application may await the decision of the Division Bench.
15. I have heard the counsel for the parties and perused the record of the rectification petition.
16. At the outset, a reference may be made to the relevant observations of the Coordinate Bench of this Court in the judgment dated 24th September, 2018 passed in CS(COMM) 229/2018 filed by the petitioner against the respondent no.1 and other defendants, reported as Burger King Corporation v. Ranjan Gupta And Ors., 2018 SCC OnLine Del 11484.
11. The use by the Defendants is of a logo, Burger King, which is almost identical to the Plaintiff’s logo. Both the competing logos are set out herein below:- BANSAL
19. Insofar as the adoption of the trademark „Burger King‟ is concerned, the explanation given by the Defendants in their written statement is `fantastic’ to say the least. The manner, in which the Defendants claim coinage of the mark, by using the first letters of the names of various family members shows that the same is a completely dishonest attempt to defend something which is indefensible. The explanation for the coinage of the mark makes it clear that the Defendants are trying to adopt a process of reverse deduction to explain use of the mark Burger King. Such an explanation, if accepted, would lead to trivializing trademark rights.
20. The plaint is clear that the mark „Burger King‟ was adopted in 1954 in the US, and thus, the evidence of transborder reputation, which is mentioned in the plaint, cannot be rejected at this stage when the trial is yet to commence. The list of outlets in various airports thus shows that travellers from India would have had knowledge of Burger King. It cannot be disputed that there are thousands of outlets of the Plaintiff across the world. The Defendants’ explanation for the adoption being extremely unimaginative and the identical logo being an indication of dishonest adoption, the injunction already granted is liable to be confirmed. The manner in which the Defendants are soliciting enquiries and are wanting to give franchisees for their outlets under the name Burger King poses a clear and imminent threat for extreme dilution of the mark.
22. It is accordingly directed that the injunction granted on 25th July, 2014 shall stand confirmed. The Defendants are thus injuncted from using the mark BURGER KING as also the infringing logo in respect of their food outlets or restaurants, in any manner whatsoever. The Defendants are also restrained from granting any franchisees or opening any new outlets under any name containing the mark BURGER KING. This, however, does not bar the Defendants from using the mark/name Burger Emperor.” BANSAL
17. Even though an appeal has been filed on behalf of the respondent no.1 against the aforesaid judgment, admittedly, the operation of the judgment has not been stayed by the Division Bench. Therefore, I see no reason to not rely on the findings and the observations made in the aforesaid judgment.
18. Earlier, in the judgment dated 6th March, 2023 passed by this Court in CS(COMM)229/2018 titled Burger King Corporation v. Ranjan Gupta & Ors., I had observed that the plea raised by the respondent no.1 herein with regard to the invalidity of registrations granted in favour of the petitioner herein in respect of the trademark BURGER KING and other formative marks, is prima facie not tenable. Relevant observations of the said judgment are set out below: “32. In view of the discussion above, I am of the considered view that the plea raised by the defendant with regard to the invalidity of registrations granted in favour of the plaintiff in respect of the trademark BURGER KING and other formative marks, is prima facie not tenable. There is no reasonable prospect of the defendants succeeding in the cancellation petitions filed by them. Therefore, no issue with regard to validity of the registrations of trademarks of the plaintiff is liable to be framed in the facts and circumstances of the present case.”
19. In view of the aforesaid finding, four rectification petitions filed by the respondent no.1 seeking cancellation/removal of the BURGER KING trademarks registered in the name of the petitioner, have been dismissed by me today by a separate order.
20. In view of the discussion above, it is clear that the impugned trademark has been adopted by the respondent no.1 dishonestly to trade upon the established goodwill and reputation of the petitioner. The nature of BANSAL the impugned mark is such that it is likely to deceive public and create confusion in the market as regards the source of the goods manufactured and sold under the impugned trademark.
21. The petitioner has made out a prima facie case in its favour. Balance of convenience is also in favour of the petitioner and against the respondent no.1. Irreparable harm will be caused to the petitioner if the operation of the impugned mark is not stayed till the disposal of the rectification petition.
22. Consequently, the operation of the impugned mark bearing registration no.2052257 in class 43 is stayed till the final adjudication of the rectification petition.
23. In the event that the respondent no.1 succeeds in the appeal filed by them against the judgment dated 24th September, 2018 in Burger King (supra), liberty is given to the respondent no.1 to move an appropriate application seeking vacation/modification of this order.
24. Accordingly, the application stands disposed of.
25. List on 12th July, 2023. AMIT BANSAL, J. APRIL 21, 2023 BANSAL